LG Chem, Ltd.Download PDFPatent Trials and Appeals BoardJun 4, 20212020003662 (P.T.A.B. Jun. 4, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/755,325 02/26/2018 Ju Eun Kim LGCHEM 3.3F-1324 5888 86765 7590 06/04/2021 LGCHEM Lerner, David, Littenberg, Krumholz & Mentlik, LLP 20 Commerce Drive Cranford, NJ 07016 EXAMINER WHITELEY, JESSICA ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 06/04/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): eOfficeAction@lernerdavid.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte JU EUN KIM, GI CHEUL KIM, SE YEOL PARK, and KI HYUN KIM __________ Appeal 2020-003662 Application 15/755,325 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and BRIAN D. RANGE, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s decision finally rejecting claims 1, 3, 4, and 6–16. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as LG CHEM, LTD. Appeal Brief dated November 22, 2019, at 2. Appeal 2020-003662 Application 15/755,325 2 Claim 1, the sole independent claim on appeal, is reproduced below from the Claims Appendix to the Appeal Brief. The limitations at issue are italicized. 1. A method for preparing a superabsorbent polymer, comprising: thermal polymerizing or photopolymerizing a monomer composition comprising water-soluble ethylenically unsaturated monomers and a polymerization initiator to form a hydrogel polymer; drying the hydrogel polymer; grinding the dried polymer; and surface crosslinking the ground polymer in the presence of a surface crosslinking agent consisting of a polyhydric alcohol and porous silica or clay to form the superabsorbent polymer, wherein the polyhydric alcohol having a carbon number of 4 to 5 and having a branched alkyl group. Appeal Br. 14.2 On appeal, the Appellant seeks review of the Examiner’s rejection of claims 1, 3, 4, and 6–16 under 35 U.S.C. § 102(a)(1) as anticipated by Nogi.3,4 B. DISCUSSION Claim 1 recites a method for preparing a superabsorbent polymer comprising, inter alia, the step of surface crosslinking [a] ground polymer in the presence of a surface crosslinking agent consisting of[5] a polyhydric alcohol and porous silica or clay to form the superabsorbent polymer, wherein the 2 Revised Appeal Brief dated January 21, 2020 (“Appeal Br.”), at 14. 3 US 2014/0042364 A1, to Nogi et al., published February 13, 2014 (“Nogi”). 4 The Examiner withdrew the anticipation rejection of claims 1, 4, 6, 7, 9, 10, and 12–16 based on Jung and the obviousness rejection of claims 3 and 11 based on the combination of Jung and Nogi. Examiner’s Answer dated February 13, 2020 (“Ans.”), at 5. 5 See AFG Indus., Inc. v. Cardinal IG Co., Inc., 239 F.3d 1239, 1245 (Fed. Cir. 2001) (“‘[C]losed’ transition phrases such as ‘consisting of’ are understood to exclude any elements, steps, or ingredients not specified in the claim.”). Appeal 2020-003662 Application 15/755,325 3 polyhydric alcohol ha[s] a carbon number of 4 to 5 and ha[s] a branched alkyl group. Appeal Br. 14 (emphasis added). The Examiner finds Nogi discloses a method of producing a polyacrylic acid based water absorbent resin powder comprising, inter alia, the step of surface crosslinking a pulverized polymer, wherein the surface crosslinking agent is a polyhydric alcohol within the scope of claim 1 (i.e., neopentyl glycol). Final Act. 2–3 (citing Nogi ¶¶ 263, 757).6 The Examiner finds the surface crosslinking agent is used in combination with a water-insoluble fine particle, such as silicon oxide or clay. Final Act. 3 (citing Nogi ¶¶ 302, 307, 308). The Appellant argues that the Examiner has failed to establish that Nogi “teaches each and every element as arranged in claim 1 without the need for picking and choosing.” Appeal Br. 3; see also In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (To anticipate a claim, “the [prior art] reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.”). The Appellant’s argument is supported by the record. Turning to the paragraphs of Nogi relied on by the Examiner, Nogi’s paragraph 263 discloses mixing an alkylene carbonate compound and a polyhydric alcohol compound, wherein the polyhydric alcohol compound is preferably a C3-C6 polyhydric alcohol. Appeal Br. 4. The Examiner finds that neopentyl glycol, a C-5 polyhydric alcohol, is described in Nogi’s paragraph 757 (Example 3-6). Final Act. 3. However, paragraph 757 merely discloses that neopentyl glycol was 6 Final Office Action dated April 19, 2019. Appeal 2020-003662 Application 15/755,325 4 “stored in the melted state until use as a surface crosslinking agent.” Nogi’s paragraph 758 (Example 3-6) describes the surface crosslinking agent as “neopentyl glycol/propylene glycol/deionized water” which is outside the scope of claim 1. See Appeal Br. 5–6 (arguing, in reference to Nogi’s Example 3-6, that a water-insoluble fine particle is absent from the surface crosslinking solution and propylene glycol is not a polyhydric alcohol having 4 to 5 carbons and does not have a branched alkyl group as claimed). The Examiner finds that Nogi’s paragraphs 302, 307, and 308 describe water-insoluble fine particles. Final Act. 3. Those paragraphs are part of a section titled “Ion Binding Surface Crosslinking Agent, Water-Insoluble Fine Particle.” Nogi ¶ 302; Appeal Br. 6. Paragraph 307 discloses that “[e]xamples of the water- insoluble fine particle include inorganic fine powders such as silicon oxide, aluminum oxide, clay and kaolin, and organic fine particles such as calcium lactate and a metal soap.” Paragraph 308 discloses: It is preferable that the water absorbent resin powder of the present invention contains simultaneously or separately further a liquid permeability improving agent selected from a polyamine polymer, a polyvalent metal salt (polyvalent metal cation), and a water-insoluble fine particle, in addition to the surface crosslinking agent. We find that Nogi’s paragraphs 302, 307, and 308 do not “clearly and unequivocally” disclose silica or clay in combination with the claimed polyhydric alcohol. Arkley, 455 F.2d at 587 (emphasis added). Finally, the Examiner directs our attention to Nogi’s paragraph 310 to support a finding of anticipation. Ans. 4, 6. Paragraph 310 discloses: Hereinafter, further, a polyhydric alcohol and/or α- hydroxycarboxylic acid (salt) which are used in combination with an Appeal 2020-003662 Application 15/755,325 5 ion binding surface crosslinking agent, a water-insoluble fine particle, or an ion binding surface crosslinking agent will be explained. To arrive at the claimed surface crosslinking agent from the disclosure in Nogi’s paragraph 310, one of ordinary skill in the art would need to select a polyhydric alcohol and a water-insoluble fine particle, to the exclusion of all other components disclosed therein. See AFG, 239 F.3d at 1245 (closed transitional phrase “consisting of” is understood to exclude any elements, steps, or ingredients not specified in the claim). Next, one of ordinary skill in the art would need to select the neopentyl alcohol used in Nogi Example 3-6. Nogi ¶ 757. Finally, one of ordinary skill in the art would need to select an inorganic fine power from the water-insoluble fine particles disclosed in Nogi and then select silicon oxide or clay from the disclosed inorganic fine powders. Nogi ¶ 307. We find that such selections may be proper in an obviousness rejection where the evidence of record provides a reason for making those selections. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (the disclosure of a multitude of effective combinations does not render any particular formulation less obvious especially where the claimed composition is used for the identical purpose taught by the prior art). Such selections, however, are not proper in the anticipation rejection on appeal. Arkley, 455 F.2d at 587. In sum, the Examiner has failed to establish that the claimed surface crosslinking agent is anticipated by Nogi. Therefore, the anticipation rejection of claims 1, 3, 4, and 6–16 is not sustained. C. CONCLUSION The Examiner’s decision is reversed. Appeal 2020-003662 Application 15/755,325 6 In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 4, 6–16 102(a)(1) Nogi 1, 3, 4, 6–16 REVERSED Copy with citationCopy as parenthetical citation